In Innogenetics, N.V. v Abbott Laboratories (Nos. 2007-1145, -1161, January 17, 2008) the Federal Circuit reverses a district court’s JMOL that a claim was not anticipated, and remands for a new trial. The patent technology at issue relates to diagnostic tools for detecting and classifying hepatitis C types using specific short strands of nucleic acids, “probes”, that bind to target DNA. Innogenetics sued Abbott for patent infringement. At trial, Abbott’s expert testified that the Resnick patent anticipated claim 1 of Innogenetics’ patent, and specifically that the Resnick patent disclosed probes that “distinguish” between two hepatitis C types. The word “distinguish” was objected to by Innogenetics as inappropriate, arguing that Abbott’s expert report defined “a method of genotyping” as the process of “detecting and classifying.”

The district court construed “method of genotyping,” to mean a method that “distinguishes” among types. Before the case went to the jury, the district court granted JMOL of no anticipation based on its determination that Abbott’s expert testimony “rested on an inaccurate understanding of the construction of the limitation genotyping.” Abbott’s motion for a new trial was denied.

Using an abuse of discretion review standard, the Federal Circuit finds that the district court’s determination that the expert’s testimony was tainted by an inaccurate understanding of the term genotyping is clearly erroneous. Despite the semantical difference, the panel discerns no difference in the meaning between the definitions used by the expert and the one adopted by the district court, and finds that the expert’s failure to use the district court’s exact word does not change the substance of his testimony or render it inapplicable.